UK trademarks
lose effect in
EU procedure.
UK trademarks
lose effect in
EU procedure.
from
Can UK trademarks still be asserted against EU trademarks after Brexit? And must earlier laws remain valid throughout the opposition proceedings?
The European Court of Justice has ruled that older trademarks protected in the UK can no longer serve as a basis for oppositions against EU trademark applications after Brexit. The ruling also clarifies a fundamental issue: older laws must remain valid not only at the time of application, but throughout the entire procedure.
What is it all about?
In 2016, the Japanese company Nowhere Co. filed an opposition against an EU figurative mark application with the designation “APE TEES” (representation of a comic monkey). It relied on three earlier trademarks with similar monkey representations that it used in the UK and which were legally protected there. The problem: the Brexit transition period ended on December 31, 2020 – but the EU Trade Mark Office did not rule on the opposition until February 2021.
The Board of Appeal of the Trade Mark Office rejected the opposition: British trade mark rights could no longer be the basis for EU proceedings after Brexit. The EU Court of First Instance initially ruled in Nowhere’s favor and overturned the decision. The Trademark Office appealed this decision to the European Court of Justice.
The decision
The ECJ rules in favor of the EUIPO and overturns the first-instance judgment(judgment of 05.02.2026, C-337/22 P). Older trademark rights must remain in force until the date of the final opposition decision – even if the proceedings go through several instances, according to the ECJ.
The wording of the regulation is clear
The court of first instance had relied on earlier case law according to which only the date of application for registration of the later trademark was decisive. The ECJ expressly contradicts this case law and analyzes the exact wording of the EU Trademark Regulation:
The Trademark Ordinance contains two requirements: Firstly, rights to the earlier trademark must have been “acquired” before the filing date (past tense – temporal priority). Secondly, the commercial designation must“confer” (present tense) on its owner the law to prohibit the use of a later trademark. Similarly, the introductory sentence states: the trademark applied for“is” excluded from registration.
It follows from the wording that the acquisition of the earlier law is to be assessed on the basis of the filing date. However, it also follows that the opposition can only be upheld if the earlier right gives its owner the law to prohibit the use of a later trademark not only at that time, but also at the later time of filing the opposition and until the time of the decision.
Systematic approach confirms interpretation
The ECJ refers to comparable regulations for registered earlier trademarks: There, too, the filing date is only relevant for the question of temporal priority, but the earlier trademark must be valid until the decision. The Boards of Appeal of the Trade Mark Office must check whether an earlier law has been revoked by a court decision in the meantime to ensure that it still has the required protective effect.
What is the purpose of opposition proceedings?
The decisive factor is the purpose of protection: an older trademark that no longer enjoys protection can no longer fulfill its main function – namely to show consumers where a product comes from. If the earlier trademark can no longer perform this function, it can no longer be impaired by the registration of the later trademark.
The opposite interpretation would run counter to the necessary balance: On the one hand, trademark owners should be protected; on the other hand, signs must remain available for other companies who wish to use them to identify their goods.
Brexit consequence: UK is no longer a member state
According to Art. 50 para. 3 TEU, Union law will no longer apply to the United Kingdom from the date on which the Withdrawal Agreement enters into force (01.02.2020). The Withdrawal Agreement did provide for a transition period until 31.12.2020. However, its Art. 54 to 61 (intellectual property) do not contain any provision for oppositions based on UK laws before Brexit and which will be decided after the transition period.
The Trade Mark Regulation requires that the earlier trademark confers the right to prohibit “under the law of a Member State”. After December 31, 2020, UK law no longer constituted a “law of a Member State” in the absence of a provision to the contrary in the Withdrawal Agreement.
Territoriality principle applies
According to the principle of territoriality, trade mark effects are limited to the territory of protection. An EU trade mark registered after 31.12.2020 has effect in the 27 EU Member States – not in the United Kingdom. There can therefore be no conflict with UK trademarks.
The court had argued that a conflict could have existed at least during the period between notification and the end of Brexit. The ECJ disagrees with this view. Opposition proceedings do not concern actual use, but a potential conflict due to the coexistence of two valid laws. The EU trade mark can only be used against third parties from the date of publication of the registration – in this case only after Brexit. A potential conflict therefore no longer existed.
Practical significance for companies
Companies that base oppositions on earlier trademarks must ensure that these remain valid throughout the proceedings. The cessation of an earlier law through revocation, surrender or – as here – territorial exclusion leads to rejection.
UK trademarks that served as a basis for opposition before Brexit will lose their effect if the EUIPO decision was issued after December 31, 2020. Affected parties should check whether they can switch to other earlier laws (EU trademarks, national trademarks in the 27 member states).
The longer EUIPO proceedings take, the greater the risk that older laws will lapse in the meantime. Rights holders should consistently monitor renewal deadlines and usage obligations.
Conclusion
The ruling creates legal certainty in a complex transitional situation. However, the clarification at the relevant time goes beyond Brexit.
It applies to all constellations in which older laws cease to apply during opposition proceedings. The previous “Brownie case law”, which held otherwise, is therefore obsolete.
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